Trademarks - When and WHY to file one?

We are often asked when is the right time to register a trade mark ("trademark" in the US).

Most IP lawyers would say "as early as possible" and "for everything". All lawyers and IP lawyers included are wired to reduce risk and "as early as possible" and "for everything" tends to be the least risky strategy.

This is very similar, in our view, to "when should we get investors to sign a CDA ("NDA" in the US). Many lawyers advise their clients "always". The practicality of business is closer to "never".

So let's start at the beginning.

The first thing to do is determine how important is the trade mark for the business.

Does the business rely on the brand?

Some businesses are purely reliant on brand. A clothing brand, a beauty brand, a chain of coffee shops - these are the types of businesses where pretty much all value lies in the brand.

For these sort of businesses, registering a trade mark needs to be one of the very first things that they do, as that trademark will become one of their most important assets.

For some businesses, the brand is less important. A company that develops a very particular patent protected technology in the field of biotech may see very little change to its business if it changes its name or its branding.

Branding is always important, but it is less important when it is not the core proposition of the business. For such a business, waiting until raising funding before submitting the first trade mark application is entirely reasonable.

The second question that we need to look at is how much goodwill does the brand already have.

How mature is the brand?

Is it an established brand? Do customers recognise it? Will customers pay a premium to buy products/services if they are sold under the brand?

If the brand is already established and customers are recognising it, it means it has value. It needs to be protected as a matter of urgency.

Third question would be what are we going to protect.

Is it a house brand or a product name?

Businesses tend to have one main house brand and different brands for products. It could be that a particular product is so important that its brand is more valuable than the entire business and its name is more known than the name of the business, but in most cases, the house brand is the most important brand of the business.

Bottom line - the more critical the brand is for the business, the earlier you should file it and the more you should invest in protecting it.

Now, that we have some clarity on what makes a brand important, we can think of timing.

If the brand is very important, it is clearly sensible to go ahead and file the trade mark with the registry as early as possible.

What about the costs?

Filing a trademark in one country (e.g. UK) is not particularly expensive compared to subsequent filings. It could be useful to get an idea of all jurisdictions where the business intends to use the brand and get a quote for all of these jurisdictions, up front.

If the brand is new, has no goodwill and relates to a business that does not rely on brand as its primary value, it is reasonable to take a deep breath and a sensible approach.

It is still, obviously, advisable to file as early as possible. However, waiting for a funding round to be completed, or holding on with filing a trade mark for the logo and focusing just on the words are usually reasonable in such circumstances.

Before filing - Search!

It is very advisable to always look around to see what similar names are already used out there. Filing a trade mark without checking could be risky - it could even lead to the creation of problems that would have otherwise been avoided.

Many organisations track filings on a regular basis. You could be using a brand uninterrupted for years, but once you file a trade mark, an owner of a similar trade mark will be notified, and this could spell trouble!

Watch our free video on how to do the trade mark search yourself:

Or drop us an email, and we will do the trade mark search for you, and provide a detailed results report.

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